Trademark lawsuit over key words in web pages

17 Dec 2003

      ---------- Forwarded message ----------
Date: Wed, 27 Aug 1997 15:32:36 -0700 (PDT)
From: Declan McCullagh <declan@well.com>
To: fight-censorship-announce@vorlon.mit.edu
Subject: Trademark lawsuit over key words in web pages

This is a fascinating lawsuit. Might keywords in web pages -- inserted
like tasty morsels to attract hungry scavenger robots -- violate the law? 
Has trademark law become so broad that it violates long-held principles of
free expression? What if my web page criticizes, say, Microsoft's
alliance with Apple -- am I allowed to include "Microsoft sucks" as
keywords? Certainly in this case no person would confuse my web site with
microsoft.com -- but might a robot webcrawler?

-Declan

------------------

http://www.ljx.com/internet/

   Patents.com Sues for Trademark Infringement: Can a publisher
   infringe a law firm's trademark by including its name in computer
   code? A patent law firm is taking the question to federal court.

   New York based Oppedahl & Larson, which operates the Internet site
   www.patents.com, is suing five companies it claims improperly used the
   firm's name to draw business to their web sites.

   The firm is charging the companies and three individual defendants
   with unfair competition and trademark infringement for including the
   firm's name without permission in program coding for their web sites.
   Attorneys say some of the coding -- called a meta-tag -- caused
   Internet users looking for Oppedahl & Larson to be directed by a
   search engine to another company. [...]

------------------

From: Sandi <sandi@spiderwebb.com>
...
Subject: Re: Competitor Name in Meta-tags Is a No-No
Date: Wed, 27 Aug 1997 15:31:45 -0600
Dr. Welch of Advanced Concepts (who is being sued) has been
a online friend of mine for over a year now.  In fact, I bought my first
virtual domain from him and ProWebSite.  He is just the nicest
guy - a dentist in Texas.  This whole thing has him quite uptight
though.  I guess you just can't be toooooo careful with those
pesky Meta Tags...
~Sandi <back to lurk mode>
------------------

IN THE UNITED STATES DISTRICT COURT
FOR THE DISTRICT OF COLORADO

Civil Action No. 97-Z-1592

OPPEDAHL & LARSON,
Plaintiff,

v.

ADVANCED CONCEPTS, ROBERT A. WELCH,
CODE TEAM - LBK, INC., GEORGE WILLIAMS,
PROFESSIONAL WEBSITE DEVELOPMENT,
DAVE DEAN, MSI MARKETING, INC., and
INTERNET BUSINESS SERVICES,
Defendants.

[...]

   36. Based on an evaluation of the underlying source documents,
   Plaintiff has determined that the URLs on defendants' web sites are
   using Plaintiff's "OPPEDAHL" and "LARSON" marks to erroneously
   identify to search services that these URLs are identifying services
   provided by Plaintiff.

   37. Notwithstanding plaintiff's well-known and prior use of, and prior
   statutory and common-law rights in, the marks "OPPEDAHL & LARSON,"
   defendants, without the consent of plaintiff, have adopted, used and
   caused to be used in interstate commerce, and continues to use and
   cause to be used, the substantially identical mark in connection with
   identifying the source of the content of its web pages.

   38. Such use by defendants of web pages bearing a substantially
   identical mark to plaintiff's mark "OPPEDAHL & LARSON" is misleading
   and is likely to cause confusion and mistake, and to deceive the
   public into believing falsely that defendants' web pages are connected
   with and/or sponsored or authorized by Plaintiff, when in fact
   defendants have no connection whatsoever with Plaintiff in regard to
   such web pages.

   39. Defendants' misleading use of a mark substantially identical to
   the mark "OPPEDAHL & LARSON" constitutes false advertising, false
   designation of origin, and false representation in and affecting
   interstate commerce in violation of Section 43(a) of the Lanham Act,
   15 U.S.C. § 1125(a).

   40. As a proximate result of the acts of defendants as alleged herein,
   Plaintiff has suffered and will continue to suffer great damage to its
   business, goodwill, reputation, and profits.

   41. Plaintiff has no adequate remedy at law against this unfair
   competition. Unless defendants are preliminarily and permanently
   enjoined by this Court, plaintiff will continue to suffer irreparable
   harm.

                            Second Cause of Action

(Federal Dilution)

   42. Plaintiff realleges and incorporate herein by reference the
   allegations of paragraphs 1-37 and 40-41 of the Complaint as set forth
   above.

   43. As a direct result of plaintiff's long and extensive experience,
   care, and skill in producing and marketing legal services and
   providing information on intellectual property law under the mark
   "OPPEDAHL & LARSON," plaintiff's mark has become famous.

   44. Defendants, by using a confusingly similar trademark, are
   misleading the public into believing that their services are connected
   with Plaintiff's business. On information and belief, the defendants
   willfully intended to trade on the reputation of Oppedahl & Larson or
   to cause dilution of the "OPPEDAHL & LARSON" mark.

   45. Such acts by defendants are likely to deprive plaintiff of the
   benefit of the goodwill attached to the mark "OPPEDAHL & LARSON,"
   injure plaintiff's business reputation, and dilute the distinctive
   quality of plaintiff's trademark in violation of 15 U.S.C. § 1125(c).

   46. As a proximate result of the acts of defendants as alleged herein,
   plaintiff has suffered and will continue to suffer damage to its
   business, goodwill, and reputation.

   47. Plaintiff has no adequate remedy at law against this dilution of
   and injury to business reputation. Unless defendants are enjoined by
   this Court, plaintiff will continue to suffer irreparable harm.

                             Third Cause of Action

(Unfair Competition - Colorado Common Law)

   48. Plaintiff realleges and incorporates herein by reference the
   allegations of paragraphs 1-38 the Complaint as set forth above.

   49. Plaintiff's mark "OPPEDAHL & LARSON" is inherently distinctive and
   has acquired a strong secondary meaning.

   50. Defendants' wrongful use of a substantially identical and
   therefore confusingly similar trademark as alleged herein is likely to
   deceive the public into believing falsely that there is a connection
   between plaintiff and defendants. Defendants have unfairly competed
   with plaintiff in violation of the Colorado common law.

   51. As a proximate result of the acts of defendants as alleged herein,
   plaintiff has suffered and will continue to suffer great damage to its
   business, goodwill, and reputation.

   52. Plaintiff has no adequate remedy at law against this unfair
   competition. Unless defendants are enjoined by this Court, plaintiff
   will continue to suffer irreparable harm.

   53. In acting as alleged herein, defendants have acted with
   oppression, fraud, and malice toward plaintiff. Plaintiff is therefore
   entitled to an award of punitive damages for the sake of example and
   by way of punishing defendants.

                            Fourth Cause of Action

(Trademark Infringement - Colorado Common Law)

   54. Plaintiff realleges and incorporate herein by reference the
   allegations of paragraphs 1-38 and 51-53 of the Complaint as set forth
   above.

   55. Plaintiff has used the mark "OPPEDAHL & LARSON" for providing
   intellectual property information over the Internet for many years.
   Said mark has become extensively known and associated in the minds of
   the public with plaintiff's business and services.

   56. Defendants have used the designation "OPPEDAHL" and "LARSON" in
   connection with their web pages that is confusingly similar to that
   created and used by plaintiff with intentional disregard of
   plaintiff's trademark rights. As a result of such acts, defendants are
   misleading the public into believing falsely that their web pages are
   connected with plaintiff's services, all in violation of the Colorado
   common law concerning the protection of trademarks.

   57. As a proximate result of the acts of defendants as alleged herein,
   plaintiff has suffered and will continue to suffer damage to its
   business, goodwill, and reputation.

   58. Plaintiff has no adequate remedy at law for the infringements of
   the mark "OPPEDAHL & LARSON" alleged herein. Unless defendants are
   enjoined by this Court, plaintiff will continue to suffer irreparable
   harm.

   59. In acting as alleged herein, defendants have acted with
   oppression, fraud, and malice toward plaintiff. Plaintiff is therefore
   entitled to an award of punitive damages for the sake of example and
   by way of punishing defendants.

   WHEREFORE, Plaintiff prays for relief as follows:

    1. That defendants, their officers, agents, servants, employees and
       representatives and all other persons, firms or corporations in
       active concert or participation with them, be preliminarily and
       thereafter permanently enjoined and restrained from: (1) using in
       any manner in connection with any of their web pages, or in
       connection with any advertising or promotions of such web pages,
       the names and trademarks "OPPEDAHL," "LARSON," and "OPPEDAHL &
       LARSON" and any colorable imitation thereof; and (2) doing any act
       or thing calculated or likely to cause confusion or mistake in the
       minds of members of the public or the trade, or prospective users
       of defendants' services, as to the source of services provided,
       produced, distributed, sold or offered for sale thereby, or likely
       to deceive members of the public or the trade, or prospective
       purchasers, into believing that there is some connection between
       defendants' and plaintiff or that defendants' web pages are being
       produced, distributed, sold or offered for sale with plaintiff's
       authorization;
    2. That defendants, pursuant to 15 U.S.C. § 1116(a), be directed to
       file with this Court and serve upon plaintiff within thirty (30)
       days after entry of the injunction, a report in writing under oath
       setting forth in detail the manner and form in which they have
       complied with the injunction;
    3. That defendants, pursuant to 15 U.S.C. § 1118, be ordered to
       deliver up for destruction all media, packages, wrappers,
       receptacles, and articles in their possession bearing the mark
       "OPPEDAHL," "LARSON" and/or "OPPEDAHL & LARSON," or any
       reproduction, counterfeit, copy, or colorable imitation thereof,
       and all plates, molds, matrices, and other means of making the
       same;
    4. That defendants account for and pay over to plaintiff all of the
       profits realized by defendants, or others acting in concert or
       participation with defendant, from the sale and distribution of
       their services in connection with the unauthorized use of the
       marks "OPPEDAHL," "LARSON" and/or "OPPEDAHL & LARSON," and
       defendants' unfair methods of competition as alleged herein;
    5. That plaintiff recover its damages sustained as a result of
       defendants' unfair competition and infringement of plaintiff's
       marks;
    6. That plaintiff be awarded three times defendants' profits or three
       times plaintiff's damages, whichever is greater, together with its
       reasonable attorneys' fees pursuant to 15 U.S.C. §§ 1117(a) and
       (b);
    7. The plaintiff be awarded punitive damages pursuant to Colorado
       common law.
    8. That plaintiff recover the costs of this action; and
    9. That plaintiff be granted such other and further relief as the
       Court deems just and proper.

   OPPEDAHL & LARSON

   Dated: July 23, 1997

Carl Oppedahl
Oppedahl & Larson
611 Main Street
P.O. Box 5540
Frisco, Colorado  80443-5540
(970) 513-9950
Fax (970) 513-9948
Plaintiff

Of Counsel:

Marina T. Larson
Stanley D. Ference III
Oppedahl & Larson
1992 Commerce Street, Suite 309
Yorktown Heights, New York  10598
(914) 245-3252
Fax (914) 962-4330

Address of plaintiff:

Oppedahl & Larson
611 Main Street
P.O. Box 5540
Frisco, Colorado  80443-5540